Recent Publications - Intellectual Property


Minimizing Legal Risks When Using the Word ‘Organic’
July 27, 2017 | Nancy A. Del Pizzo | Intellectual Property
Nancy Del Pizzo’s article, “Minimizing Legal Risks When Using the Word ‘Organic’,” appeared in the July/August issue of Nutrition Industry Executive. The article details the U.S. Department of Agriculture’s requirements for the use of the word “organic” as well as what is considered false and misleading advertising for organic products. To read the article, click …
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SCOTUS: Provision Barring Registration of Disparaging Trademarks Unconstitutional
June 19, 2017 | Michael C. Cannata | Frank M. Misiti | Intellectual Property
It has been a long road for Simon Tam and his bandmates in the rock group “The Slants.”  Back in November 2011, Tam filed a trademark application for THE SLANTS for use in connection with “entertainment in the nature of live performances by a musical band.”  In doing so, Tam hoped to reclaim the otherwise …
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Del Pizzo Published in Westlaw Journal
May 23, 2017 | Intellectual Property
Nancy A. Del Pizzo published her article, “Using Open Source Code for Development of ‘Proprietary’ Software,” in the May 10, 2017, issue of Westlaw Journal, Intellectual Property, Litigation News and Analysis. To read the article, Click Here. …
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The Eagles Refuse to Take It Easy on Alleged Infringer
May 17, 2017 | Intellectual Property
Like The Dude from The Big Lebowski, the “Hotel California,” located on the Baja Peninsula in Mexico, is likely no longer a fan of The Eagles.  Earlier this month, the iconic classic rock band filed suit against the hotel in the U.S. District Court for the Central District of California seeking to take it to …
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PacerMonitor quotes Cannata
April 14, 2017 | Intellectual Property
Michael Cannata was interviewed for an article entitled, “Patent Trolls’ East Texas Haven Threatened in Supreme Court,” which discusses the TC Heartland v. Kraft Foods case before the U.S. Supreme Court. The case raises the question of whether it is appropriate to resolve a patent infringement claim in Marshall, Texas, if a defendant does not maintain …
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Del Pizzo Quoted in Westlaw
April 13, 2017 | Intellectual Property
Nancy Del Pizzo provided the following comment in an article published in Westlaw’s Journal of Intellectual Property regarding Mavrix Photographs LLC v. LiveJournal Inc.: “This decision should put social media companies on notice to, at the very least, closely follow this case on remand and educate its ‘moderators’ on the DMCA, particularly its ‘red flag’ exception.” …
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Starbucks Hits the Bong Designer In the Wallet
December 5, 2016 | Intellectual Property
The U.S. District Court for the Central District of California recently granted Starbucks’ motion for a default judgment against James Landgraf, an individual responsible for the design and sale of glass bongs, clothing, and other novelties that infringed certain logos owned by Starbucks. Starbucks Corp. v. Glass, 2016 U.S. Dist. LEXIS 145694 (C.D. Cal. Oct. …
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Emerging Case Law Exposes ‘Bot’ Makers To DMCA Absent Copyright Infringement
October 19, 2016 | Intellectual Property
Nancy Del Pizzo has written an article for Westlaw Journal of Intellectual Property entitled, “Emerging Case Law Exposes ‘Bot’ Makers To DMCA Absent Copyright Information,” Click here to read the article. …
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Sixth Circuit’s Decision on Privacy Claims Over Data Breaches
October 18, 2016 | Professional Liability | Complex Torts & Product Liability | Intellectual Property
Data breaches such as the one Yahoo recently revealed (500 million accounts!) get the big headlines. In response, large companies double down on their efforts to protect the security of their data. But small to midsize businesses often fail to appreciate the risk of a data breach to their own business. They may believe that …
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Court Rejects Insured’s Attempt To “Shoe-Horn” Trademark Infringement Claims Under Advertising Injury Provisions
October 13, 2016 | Intellectual Property | Insurance Coverage
The U.S. District Court for the Central District of California recently rejected efforts by an insured to procure coverage for allegations of trademark infringement under its “Personal and Advertising Injury” insurance coverage.  Infinity Micro Computer, Inc., et al. v. Continental Casualty Company, et al., 2016 U.S. Dist. LEXIS 134957 (C.D. Cal. Sept. 29, 2016). In …
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Cybersecurity Rulings Tap Insurance and Standing Issues
August 25, 2016 | Privacy, Data & Cyber Law | Intellectual Property
Nancy Del Pizzo and Gene Kang have published an article entitled, “Cybersecurity Rulings Tap Insurance and Standing Issues,” in the American Bar Association’s Section of Litigation, Intellectual Property, Practice Points section. To read the article, Click Here. …
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Recent Decisions by the Trademark Trial and Appeal Board
August 17, 2016 | Insurance Coverage | Intellectual Property
Mark Fails To Satisfy Lawful Use Requirement The Trademark Trial and Appeal Board (“the Board”) affirmed the refusal to register HERBAL ACCESS on the grounds that the mark was not used in lawful commerce.  The Board started its analysis with the principle that to qualify for federal trademark protection, the mark must be lawfully used …
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Infringement of Adult Images Ex(xx)ed Out of Coverage
July 19, 2016 | Insurance Coverage | Intellectual Property
The U.S. District Court for the Western District of Texas recently rejected an attempt by two online content providers to secure coverage in connection with a copyright infringement action commenced against them by an adult entertainment company.[1] Perfect 10, Inc. (“Perfect 10”) filed an action against Giganews, Inc. (“Giganews”) and Livewire Services, Inc. (“Livewire”) for …
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FTC Issues Privacy Tool, Guidance for Health-Related Mobile Apps
June 21, 2016 | Professional Liability | Complex Torts & Product Liability | Intellectual Property
Only days after the Federal Communications Commission (FCC) adopted a notice of proposed rulemaking to establish privacy guidelines applicable to Internet service providers (ISPs),1 the Federal Trade Commission (FTC) took two actions on the privacy front that will affect a smaller, but fast growing, industry: developers of mobile health applications. Given the pervasive use of …
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Cannata and Misiti issue Bulletin entitled, “No Coverage For The Sale Of Counterfeit Goods”
June 6, 2016 | Insurance Coverage | Intellectual Property
Businesses that peddle counterfeit goods beware.  According to a recent decision by the Second Circuit, the advertising injury provisions of a standard general liability policy do not obligate an insurer to indemnify its insured for damages resulting from the insured’s sale of counterfeit goods.  Given that the MSRP for all goods seized by the Department …
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Recent Decisions by the Trademark Trial and Appeal Board
May 26, 2016 | Intellectual Property
Board Requires Disclosure Of Unredacted Documents The Board granted a motion by Intex Recreation Corp. and Intex Marketing Ltd. (“Intex”) to compel The Coleman Company, Inc. (“Coleman”) to produce unredacted versions of certain documents.  Coleman claimed that the redacted information was either irrelevant or confidential.  Intex argued in response that relevance is not an appropriate …
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FCC Proposed Rules That Impact Everyone’s Online Privacy
April 19, 2016 | Professional Liability | Complex Torts & Product Liability | Intellectual Property
“Broadband Internet access service” (BIAS) is the essential conduit for the conduct of our daily personal and private lives, without which all Internet activity comes to a stop. Indeed, the Federal Communications Commission recently referred to BIAS as “the most significant communications technology of today.”1 Nevertheless, because BIAS is the road on which Internet traffic …
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Recent Decisions by the Trademark Trial and Appeal Board
March 1, 2016 | Intellectual Property
Board Rejects Request For Reconsideration By Order dated July 13, 2015, the Board denied a motion to dismiss filed by Knowluxe LLC (“Knowluxe”) seeking dismissal of a petition for cancellation on the grounds that the claims were implausible and that the rights asserted by Guess? IP Holder L.P. (“Guess”) conflicted with the: (1) doctrine of …
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The EU-U.S. Data Protection Dispute and Possible Resolution
February 18, 2016 | Intellectual Property | Complex Torts & Product Liability | Professional Liability
Early in February, the European Commission and the U.S. government agreed on a new framework for transatlantic data flows, which they are referring to as the “EU-U.S. Privacy Shield.” Lawyers advising clients with an online presence (i.e., almost all lawyers and almost all clients) typically have had little reason to be concerned about the agreement, …
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Cannata Published in the NYIPLA Bulletin
February 9, 2016 | Insurance Coverage | Intellectual Property
Michael Cannata’s column was published in the New York Intellectual Property Law’s December 2015/January 2016 issue of “The Report.”  Michael’s column is entitled, “Notable Trademark Trial and Appeal Board Decisions.” Complete summaries of the decisions can be found here.   …
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Recent Decisions by the Trademark Trial and Appeal Board
January 8, 2016 | Intellectual Property
Board Dismisses Section 2(a) Challenge to MARATHON MONDAY Application The Board dismissed an opposition filed by the Boston Athletic Association (“BAA”) to an application filed by Velocity, LLC (“Velocity”) seeking registration of MARATHON MONDAY in connection with “clothing, namely, tops, bottoms, headwear, sweatshirts, sweat pants, jackets, pullovers, caps, hats, socks.” BAA alleged that the mark …
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Standing to Assert Claims for Online Privacy Breaches
December 15, 2015 | Professional Liability | Complex Torts & Product Liability | Intellectual Property
Many believe that we are on the precipice of a deluge of litigation—both individual and multiparty/class action—concerning how an individual’s data is handled and the remedy, if any, if that data is misused or wrongfully disclosed. A case recently argued before the U.S. Supreme Court involves the intersection of the Internet and privacy laws and …
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Dioxin in the Courts
October 31, 2015
New Jersey Group Files FOIA Suit Against EPA Relating to Diamond Alkali Superfund Site A lawsuit has been filed in the U.S. District Court for the District of New Jersey against the U.S. Environmental Protection Agency (“EPA”) under the federal Freedom of Information Act (“FOIA”). The plaintiff is seeking agency records related to the proposed …
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Recent Decisions by the Trademark Trial and Appeal Board
October 23, 2015 | Insurance Coverage | Intellectual Property
Michael C. Cannata has issued an Intellectual Property Law Bulletin. We hope you find the Bulletin useful and interesting. We invite your suggestions. The Bulletin is not legal advice. Recent Decisions by the Trademark Trial and Appeal Board …
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Fifth Amendment Does Not Extend to ‘Digital Person’
October 20, 2015
An acrimonious marital breakup has been known to bring out the worst in some people. Those battles increasingly are fought on the technology field, thereby leaving courts to determine complex personal rights issues in the context of grown-ups behaving badly.1 In another such case, Crocker C. v. Anne R.,2 the Supreme Court, Kings County, addressed …
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The Park Doctrine and the Perils of “Off-Label” Promotion
September 30, 2015
The regulatory landscape on which pharmaceutical and medical device companies tread daily is littered with compliance landmines, none more dangerous than US Food and Drug Administration’s (FDA) enforcement of the misbranding provisions of the Food, Drug & Cosmetic Act (FDCA).  It is not so much the fact of FDA’s enforcement – after all, one can …
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Circuit Clarifies Time Limit for Computer Hacking Suits
August 18, 2015
Computer hacking historically has been seen as the province of lowlife criminals existing in the darkened recesses of some faraway place looking to make a dishonest buck. However, as individuals increase their online presence and, thereby, their digital vulnerability, unauthorized access to a person’s computers and to email and social media accounts is increasingly being …
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When a Client Dies, the Attorney Must Protect the Interests of the Client’s Estate
June 30, 2015
Russo v. Rozenholc, 2015 N.Y. App. DIV LEXIS 5885, 2015 NY Slip Op 06029 (N.Y. App. Div. July 9, 2015) While New York law generally requires privity between a client and attorney in order to assert a claim for legal malpractice, in Schneider v. Finmann, 15 N.Y.3d 306, 907 N.Y.S.2d 119 (2010), the New York …
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Court Overturns ‘Threat’ Conviction, But Leaves Mens Rea Standard Unclear
June 16, 2015 | Professional Liability | Complex Torts & Product Liability | Intellectual Property
The U.S. Supreme Court has ventured into the world of violent online speech. On June 1, in Elonis v. United States,1 the court overturned a defendant’s criminal conviction for communicating threats on Facebook. The court ruled that a mens rea standard of negligence was insufficient to allow the conviction to stand, but it did not …
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‘Sign-in Wraps’ Face the Judicial Microscope in New York
April 21, 2015
There are, generally speaking, four different kinds of online contracts that businesses use to obtain consent via the Internet from consumers: browsewrap, clickwrap, scrollwrap, and sign-in wrap agreements. Browsewrap exists where an online host dictates that assent is given merely by using the site. Clickwrap refers to the assent process by which a user must …
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Product Configuration Trade Dress: A Case Study
April 9, 2015
One of the underlying policy considerations of the Lanham Act is to protect consumers against false or misleading representations concerning affiliation or origin.  In that connection, Section 43(a) of the Lanham Act outlines certain protections that facilitate this important policy consideration.  One such protection extends to a product’s trade dress which can include, among other …
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New Jersey Legislators Seek to Expand Data Breach Notification
February 27, 2015 | Appeals | Intellectual Property
New Jersey legislators advanced a bill to expand notification requirements in the event of a data breach affecting New Jersey residents. The bill, Assembly No. 3146, passed on December 15, 2014, by a vote of 75–0 and was referred to the Senate Commerce Committee where it has not yet been addressed. The Assembly bill seeks …
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Tech Tools Are Increasingly Used to Disseminate Notice
February 17, 2015 | Professional Liability | Complex Torts & Product Liability | Intellectual Property
Federal Rule of Civil Procedure 23 requires two forms of class notice. Rule 23(c)(2) requires notice to a potential class member that a class has been certified and substance of the class claims. Rule 23(e) requires notice that a settlement has been negotiated, which will require court approval, and the steps that each potential class …
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Craft a Stronger Defense by Distinguishing Parody from Satire
December 31, 2014 | Appeals | Intellectual Property
“Parody” is a technique used by artists in various forms of entertainment, from comedians to radio disc jockeys to authors. “Parody,” in the copyright sense, generally involves using someone else’s copyright-protected work and results in copyright infringement, absent a license for the use. In some cases, however, an infringer can successfully claim “fair use” as …
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Court of Appeals Rejects Claim of Internet-Based Jurisdiction
December 16, 2014 | Intellectual Property
Long-arm jurisdiction over non-domiciliaries is an issue that continues to  bedevil practitioners and litigants in the Internet age. In New York, CPLR  302(a)(1)1 authorizes jurisdiction over a non-domiciliary that  “transacts any business” within the state. The test, however, can be difficult  to apply when a commercial entity uses technology to project itself into New  York …
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Circuit’s Decision Clarifies Law Of Contributory Cybersquatting
October 28, 2014 | Privacy, Data & Cyber Law | Professional Liability | Complex Torts & Product Liability | Intellectual Property
Nearly 15 years ago, Congress passed the Anticybersquatting Consumer Protection Act (“ACPA”).[1] The ACPA amended the federal trademark law known as the Lanham Act by adding two new causes of action aimed at cybersquatting.[2] Under the ACPA, a person may be civilly liable “if … that person has a bad faith intent to profit from …
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I Like the Nightlife Baby!
September 30, 2014 | Intellectual Property
In its recent decision, Cutino v. Nightlife Media, Inc., 2014 U.S. App. Lexis 15179 (Fed. Cir. Aug. 7, 2014) (“Nightlife Media”), the Federal Circuit underscored its preference for adjudicating, on the merits, trademark opposition proceedings.  The court directed the Trademark Trial and Appeal Board (“TTAB”) to consider whether one of three federal trademark registrations, owned …
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Court Addresses Bitcoin, Other Novel Online Technology Issues
August 19, 2014 | Intellectual Property | Professional Liability | Complex Torts & Product Liability
Online technology, as this column frequently has noted, presents numerous challenges to attorneys during litigation,[1] while managing their firms and marketing their services,[2] and in trying to keep up with the newest legal developments and rulings.[3]  A recent decision in a case of first impression by Judge Katherine B. Forrest of the U.S. District Court …
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Trademark Trial and Appeal Board Cancels Six Trademark Registrations Owned by the Washington Redskins*
June 24, 2014 | Intellectual Property
On June 18, 2014, the United States Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”) issued a blockbuster 2 to 1 decision cancelling six federal trademark registrations owned by the Washington Redskins.  All six registrations feature some variation of the term “REDSKINS” used in connection with professional football services.  The decision was issued …
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Website Terms of Use: Recent New York Rulings
June 17, 2014 | Professional Liability | Complex Torts & Product Liability | Intellectual Property
On a nearly daily basis, each of us is asked or asks others to agree to be bound by “terms of use” or “terms of service” (TOS) as a condition of using an Internet website or obtaining goods or services offered through a website. Whether or not TOS are enforceable continues to be a question …
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First Amendment Protects Search Engine Results
April 15, 2014 | Professional Liability | Complex Torts & Product Liability | Intellectual Property
In an ironic twist, China’s largest search engine, Baidu, has successfully argued that it was entitled to First Amendment protection in regard to its search engine results in the United States, which excluded statements by the plaintiffs, a group of New York residents who “advocated” for “the Democracy movement in China.”   In a question of …
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Defamation Claims Come of Age on the Internet
February 18, 2014 | Professional Liability | Complex Torts & Product Liability | Intellectual Property
All of the elements necessary for defamation claims seem to have coalesced on the Internet. There is the ease of posting content, including videos, on blogs and chat sites; the ubiquity of tweets, email, blogs and text messages; the pervasive abandonment of personal privacy; and the ability for almost anyone to quickly set up a …
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You Should Trademark That!
January 1, 2014 | Intellectual Property
Not so fast. With the emergence of online companies advertising discounted trademark registration services, one could easily be misled into believing that securing a trademark registration has been relegated to nothing more than a ministerial act; that with the insouciant wave of the hand, a trademark registration will instantaneously appear at your door step. Nothing …
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You Should Trademark That!
December 31, 2013 | Corporate | Insurance Coverage | Intellectual Property
Not so fast.  With the emergence of online companies advertising discounted trademark registration services, one could easily be misled into believing that securing a trademark registration has been relegated to nothing more than a ministerial act; that with the insouciant wave of the hand, a trademark registration will instantaneously appear at your door step.   Nothing …
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Accessing Email Evidence on Company Computers
December 17, 2013 | Professional Liability | Complex Torts & Product Liability | Intellectual Property
Work-related email accounts are ubiquitous and often are used by employees for personal reasons. Employees also may use their own personal email accounts on employer provided resources ? with or without the permission of the employer.  Many cases have considered the right of an employer to access an employee’s email accounts from the employee’s work …
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The Role of the Internet in the Conduct of Litigation
October 15, 2013 | Professional Liability | Complex Torts & Product Liability | Intellectual Property
Much has been written (in this column and elsewhere) regarding lawyers’ adoption of social media and other Internet enabled applications for such diverse purposes as discovery, advertising, client communication,  research and the like.  Indeed, due to the proliferation of portable devices, including laptops, smartphones and tablets, whether in their offices or not, lawyers now rely …
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Email Can Constitute Binding Enforceable Stipulation of Settlement
August 20, 2013 | Intellectual Property | Complex Torts & Product Liability | Professional Liability
Plus ça change, plus c’est la même chose.[1] It is a lesson that lawyers should take to heart when incorporating technology in their every day best practices.  Technology may have changed the speed, immediacy, and even the formality of communication, but the effect of the communication will be determined by its content as interpreted by …
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When Judges ‘Friend’ Lawyers: Must Recusal Necessarily Follow?
June 18, 2013 | Professional Liability | Complex Torts & Product Liability | Intellectual Property
It should be no surprise that the continuing growth of social media tools such as Facebook, Twitter, and LinkedIn has led to questions about its use by members of the legal community, including members of the judiciary. In fact, New York’s Advisory Committee on Judicial Ethics[1] has just issued another opinion[2] exploring the ethical constraints …
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Courts Divide Over Intellectual Property Licensee’s Rights When Bankrupt Licensor Rejects License
April 30, 2013 | Corporate | Insurance Coverage | Intellectual Property
Celeste M. Butera, a partner in the firm’s Insurance Coverage & Litigation and Intellectual Property Practice Groups and Stuart I. Gordon and Matthew V. Spero, members of the firm’s Corporate & Commercial Practice Group, co-authored, “Court’s Divide Over Intellectual Property Licensee’s Rights When Bankrupt Licensor Rejects License,” which appeared in the April/May 2013 issue of Pratts …
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Online Retailers Lose Challenge to New York’s Sales Tax
April 16, 2013 | Professional Liability | Complex Torts & Product Liability | Intellectual Property
In a case that has far-reaching ramifications because of the exponential expansion of cyberspace in general, and because of the growth of commerce over the Internet in particular, the New York Court of Appeals has rejected challenges by two major online retailers to New York’s “Internet tax,”[1] which requires collection of a sales tax on …
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